Green, W. Thomas. et al.

Patent Trials and Appeals Board

May 4, 2020

2019000296 (P.T.A.B. May. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/083,449 04/08/2011 W. Thomas Green III 110751.00115 8187
27557 7590 05/04/2020
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
EXAMINER
AUGUSTINE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
05/04/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
WashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte W. THOMAS GREEN III, JAMES T. INGRAM,
JOHNATHAN SAMPLES, and GREGORY H. SCHULENBURG
____________

Appeal 2019-0002961
Application 13/083,449
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 63–82. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Greenway Medical Technologies, Inc. as the
real party in interest. Appeal Br. 2.
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Appellant states that the “object of the invention [is] to provide a
medical software system that . . . . is secure.” Spec. ¶ 19.
Claim 63, reproduced below, is representative of the subject matter on
appeal.
63. An integrated medical software system with automated
prescription management, the system comprising:

a non-transitory data storage device that stores:
a plurality of fee schedules each associated with a
payor; and

billing codes associated with procedures;
a clinical software module that includes processor-
executable instructions executed by a processor that:

captures demographic data identifying one of the
plurality of payors for a patient;

captures clinical data during an encounter with the
patient, said clinical data including a procedure
performed by a user for the patient and one or more
prescriptions the user generates for the patient;

a software application to interface the system with at
least one of a lab, a pharmacy, and a prescription system via a
network connection and to automatically submit instructions for
filling the one or more prescriptions to the at least one of a lab,
a pharmacy, and a prescription system as the one or more
prescriptions are generated for the patient during the encounter
with the patient, wherein the user can generate the one or more
prescriptions for the patient by using a user interface to select
the one or more prescriptions from one or more previously
generated prescriptions such that the instructions for filling the
one or more prescriptions will be automatically submitted to the
at least one of a lab, a pharmacy, and a prescription system
without the user writing a new prescription;

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an account management software module that includes
processor-executable instructions executed by the processor
that:
selects the billing code associated with the
procedure performed by the user for the patient

determines an allowed claim amount based on the
billing code associated with the procedure performed by
the user for the patient and the one or more fee schedules
associated with the payor identified in the demographic
data for the patient;

automatically generates a claim for the patient by
automatically populating an electronic claim form with at
least a portion of the demographic data for the patient,
the procedure performed by the user for the patient, and
the allowed claim amount; and

electronically submits the claim for payment to a
claims clearinghouse or the payor identified in the
demographic data for the patient; and

a framework module that provides a common user
authentication system and common user interface to access both
the clinical software module and the accounts receivable
software module,

wherein the demographic data, the payor, and the
procedure performed by the user for the patient are stored in a
central database that is accessible to both the clinical software
module, and the accounts receivable software module,

wherein the fee schedules for each payor and the billing
codes associated with the procedures are stored in the central
database that is accessible to both the clinical software module
and the accounts receivable software module.
Appeal Br. 24–25 (Claims App.).

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THE REJECTIONS
The following rejections are before us for review.
Claims 63–82 are provisionally rejected on the ground of
obviousness-type double patenting as unpatentable over claims 67, 68, 70,
72, 74–83, 85, 87, and 89–96 of copending application Serial No.
10/202,627.2
Claims 63–82 are rejected under 35 U.S.C. § 101.

FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 4–14 in the
Final Office Action and the Examiner’s Answer mailed Aug. 10, 2018,
concerning only the 35 U.S.C. § 101 rejection.3

ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 63–82 under 35 U.S.C. § 101.
The Appellant argues claims 64–82 as a group. We select claim 63 as
the representative claim for this group, and so the remaining claims stand or
fall with claim 63. Appeal Br. 17–19, 24–28; see also 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).

2 We will not reach a determination on the outstanding double patenting
rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential) (Panels have the flexibility to reach or not reach provisional
obviousness-type double patenting rejections.).
3 All references to the Final Office Action refer to the Final Office Action
mailed May 4, 2017 (“Final Act.”).
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An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” See 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187, 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”), 191 (citing Benson and Flook).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 212.
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In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance, 84 Fed. Reg.”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Guidance,
84 Fed. Reg. 51; see also October 2019 Update, 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and

(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5

Guidance, 84 Fed. Reg. 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance, 84 Fed. Reg. 54–55, Section III(A)(2).
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(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.

Guidance, 84 Fed. Reg. 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception; and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance,
84 Fed. Reg. 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
Service professionals that regularly schedule patient visits have
historically relied upon manual practice management, patient
records and managed care (i.e., insurance) techniques. For
instance, scheduling patients, tracking prescription orders, and
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maintaining file documentation are typically performed through
paper calendars and files. An office assistant receives and
schedules patient appointments on the paper calendar. The
service professional then checks the paper schedule for each
day.

All information concerning the patient’s medical history, such
as clinician observations, thoughts, treatments administered,
patient history, medication lists, vaccine administration lists,
laboratory reports, X-rays, charts, progress notes, consultation
reports, hospital reports, correspondence and test results, have
traditionally been kept in the paper file. Much of this
information is handwritten and signed by the clinician, or
transcribed from clinician dictation. Paper-based medical files
are typically filed alphabetically by the patient's last name, with
the patient's name, date of birth and any known allergies on the
outside of the file.

Since the medical record is paper-based and manually
produced, the information needed to bill a patient must be
manually entered into the billing application. Clinician orders
that often generate billable procedures are difficult to process
because they are written by hand and in many cases are omitted
from the patient's bill. In addition, handwritten orders for
prescriptions have been identified as the number one cause of
medical errors resulting in patient death in the United States.
Add to these issues the complexity of insurance contracts and
procedure fee schedules that govern the amount which
clinicians are to be paid for their services, and the result is a
very inefficient, labor-intensive process requiring many checks
and balances to ensure accurate processing.

Spec. ¶¶ 2, 4, 6.

The preamble states the claim is for “automated prescription
management.” Claim 63. Claim 63 recites, in pertinent part:

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a plurality of fee schedules each associated with a payor;
and
billing codes associated with procedures;

. . . .

captur[ing]demographic data identifying one of the
plurality of payors for a patient;

captur[ing] clinical data during an encounter with the
patient, said clinical data including a procedure performed by a
user for the patient and one or more prescriptions the user
generates for the patient;

. . . .

instructions for filling the one or more prescriptions to
the at least one of a lab, a pharmacy, and a prescription system
as the one or more prescriptions are generated for the patient
during the encounter with the patient, wherein the user can
generate the one or more prescriptions for the patient

. . . .

to select the one or more prescriptions from one or more
previously generated prescriptions such that the instructions for
filling the one or more prescriptions will be . . . submitted to the
at least one of a lab, a pharmacy, and a prescription system
without the user writing a new prescription;

. . . instructions . . . that:

select[] the billing code associated with the procedure
performed by the user for the patient;

determine[] an allowed claim amount based on the billing
code associated with the procedure performed by the user for
the patient and the one or more fee schedules associated with
the payor identified in the demographic data for the patient;
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. . . generate[] a claim for the patient by automatically
populating an electronic claim form with at least a portion of
the demographic data for the patient, the procedure performed
by the user for the patient, and the allowed claim amount; and

. . . submit[] the claim for payment to a claims
clearinghouse or the payor identified in the demographic data
for the patient.

The Examiner found:
These steps describe the concept of receiving data, processing
data, and providing an allowed amount, which corresponds to
the concepts identified as abstract ideas by the courts, such as
‘an idea of itself’ in Alice. An example of ‘an idea of itself’ is
the concept of ‘collecting information, analyzing it, and
displaying certain results of the collection and analysis’
(Electric Power Group).

Final Act. 5.
Thus, we find that all this intrinsic evidence shows that claim 63
recites 1) a mental process and 2) a fundamental economic practice of
generating and submitting a claim for the patient by populating a claim form
with at least a portion of demographic data for the patient. This is consistent
with the Examiner’s determination.
As to our former finding, claim 63 recites mental steps such steps as,
captur[ing]demographic data identifying one of the plurality of
payors for a patient; captur[ing] clinical data during an
encounter with the patient, said clinical data including a
procedure performed by a user for the patient and one or more
prescriptions the user generates for the patient; and instructions
for filling the one or more prescriptions to the at least one of a
lab, a pharmacy, and a prescription system as the one or more
prescriptions are generated for the patient during the encounter
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with the patient, wherein the user can generate the one or more
prescriptions for the patient . . . to select the one or more
prescriptions from one or more previously generated
prescriptions such that the instructions for filling the one or
more prescriptions will be . . . submitted to the at least one of a
lab, a pharmacy, and a prescription system without the user
writing a new prescription.

These concepts, capturing/collecting data, selecting items and
filling/executing instructions, are performed in the human mind as mental
processes because steps of receiving, transmitting, storing, and analyzing
data mimic human thought processes of observation, evaluation, judgment,
and opinion, perhaps with paper and pencil, where the data interpretation is
perceptible only in the human mind. See In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); see also FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016).). The Examiner’s
characterization of claim 63 is, in our view, fully consistent with the
Specification, including the claim language. That the claim includes more
words than the phrase the Examiner or we used to articulate the abstract
idea, and that the Examiner or we, thus, articulate the abstract idea at a
higher level of abstraction than would Appellant is an insufficient basis to
persuasively argue that the claim language has been mischaracterized or that
the Examiner has failed to consider the claim as a whole. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can
generally be described at different levels of abstraction.
As to our latter finding (2) of a fundamental economic practice,
claim 63 recites in pertinent part,
select[ing] the billing code associated with the procedure
performed by the user for the patient; determin[ing] an allowed
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claim amount based on the billing code associated with the
procedure performed by the user for the patient and the one or
more fee schedules associated with the payor identified in the
demographic data for the patient; [] generate[ing] a claim for
the patient by automatically populating an electronic claim form
with at least a portion of the demographic data for the patient,
the procedure performed by the user for the patient, and the
allowed claim amount; and . . . submit[ing] the claim for
payment to a claims clearinghouse or the payor identified in the
demographic data for the patient.

These steps recite the step of filing a claim to a third party provider,
an insurer, by identifying a billing code to identify what service was
rendered based on the provider fee schedule. Applying for payment through
a third party insurer contract is a fundamental way of paying which is long
practiced in the economic world. A fundamental economic practice is one of
certain methods of organizing human activity that are judicial exceptions.
Guidance, 84 Fed. Reg. at 52 (citing Alice, 573 U.S. at 219–20).
Turning to the second prong of the “directed to” test, claim 63 only
generically requires a “medical software system,” “a non-transitory data
storage device” a “processor,” “a user interface” and a “common user
interface.” These components are described in the Specification at a high
level of generality. See Spec. ¶¶ 48–52, 63–65, and Figs. 1, 2. We fail to
see how the generic recitations of these most basic computer components
and/or of a system so integrates the judicial exception as to “impose[] a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. 53. We find no indication in the Specification, nor does the
Appellant direct us to any indication, that the operations recited in
independent claim 63 invoke any asserted inventive programming, require
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any specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
Thus, we find that claim 63 recite the judicial exceptions of a mental
process and a fundamental economic principle.
That the claims do not preempt all forms of the abstraction or may be
limited to medical claims, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
Concerning this step, the Examiner found the following: “[t]he claim
does not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
elements when considered both individually and as an ordered combination
do not amount to significantly more than the abstract idea.” Final Act. 5–6.
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We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to capture, submit, generate, retrieve, select, determine, generate,
submit, access and apply decision criteria to data as a result amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In
re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’[] those functions can be achieved by
any general purpose computer without special programming.”). In short,
each step does no more than require a generic computer to perform generic
computer functions. The claims do not, for example, purport to improve the
functioning of the computer itself. In addition, claim 63 does not effect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. See, e.g., Spec. ¶¶ 48–52, 63–65, and Figs. 1, 2. Thus, the claims
at issue amount to nothing significantly more than instructions to apply the
abstract idea using some unspecified, generic computer. Under our
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precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (capture,
submit, generate, retrieve, select, determine, generate, submit, access) and
storing is equally generic and conventional or otherwise held to be abstract.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); see also Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract); and Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (holding sequence of processing, routing, controlling, and monitoring
was abstract). The ordering of the steps is, therefore, ordinary and
conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. App. Br. 5–23. We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Preliminarily, we note that Examiner on pages 15–17 the Final Action
lists prior art under the section titled, “Subject Matter Free of Prior Art”.
This art was not part of the Examiner’s analysis in the 35 U.S.C. § 101
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rejection. (See Final Act. 4–14). Therefore, Appellant’s arguments to the
items of the “Subject Matter Free of Prior Art” are not considered as
pertaining to error in ground of the 35 U.S.C. § 101 Rejection. See 37
C.F.R. § 41.37(c)(1)(iv).
Citing to paragraphs from its Specification, Appellant lists various
descriptions of “technical drawbacks of fragmented, standalone systems and
interfaced (rather than integrated) systems” to show the drawbacks of
interfaced systems as opposed to ones “‘using a common database’ as
recited in the claims.” Appeal Br. 13, 14.
First, in light of the breadth of the claim, Appellant’s argument is not
persuasive as to error in the rejection because neither independent claim 63
nor independent claim 73 recites the term “common database.” Even still,
although a “database” whether used commonly or not, is by definition in
some sense technological, a common database shared by plural clients has
become so notoriously settled that merely invoking it generically as common
is no more than to use well known technology for its intended purpose. See
In re TLI Commc’ns LLC Patent Litig., 823 F.3d at 612–13.
Appellant offers insufficient evidence as to why reference to the
claimed “software application to interface the system with at least one of a
lab, a pharmacy, and a prescription system via a network connection” is
meaningful beyond the face of the language itself other than being the way
that data are carried within the network. See Appeal Br. 12–13. There is no
further discussion in the Specification of the particular technology for
performing this claimed step other than generically “predefined response
templates for common requests and routine calls and questions.” Spec. ¶
217; see also Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253,
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1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d at 1336 (Focusing on
whether the claim is “an improvement to the computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity.”) Appellant’s argument of “reducing processing time” (Appeal Br.
12–13) fails as an argument because our reviewing court has held that
speed and accuracy increases stemming from the ordinary capabilities of a
general purpose computer “do[] not materially alter the patent eligibility
of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
Appellant argues, “[t]he claimed invention is not directed to ‘an idea
of itself’ as described in Alice,” because “the claimed process requires a
clinical software module that performs specific clinical functions, an account
management software module that performs specific account management
functions, and a common database that stores data received from both
modules such that it is accessible to both modules.” (Appeal Br. 15).
Although the claims must be read, as a whole, we nevertheless find,
on balance, that claim 63 is directed to an mental process and a fundamental
economic practice of generating and submitting a claim for a patient by
populating a claim form with at least a portion of demographic data for the
patient. As found supra, claim 63 only includes the following generically
recited device limitations: a “medical software system,” “a non-transitory
data storage device” a “processor,” a user interface and a “common user
interface.” What remains in the claim after disregarding these device
limitations, are abstractions, as discussed above. These devices operate in
their ordinary and conventional capacities. See Alice, 573 U.S. at 224–26.
The Appellant does not, and cannot, claim to have invented the use of them.
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The “focus” of the claim is not “on the specific asserted improvement in
computer capabilities,” but rather on using the devices as tools to implement
the abstract idea in the particular field of medical claim reimbursement. See
Enfish, 822 F.3d at 1335; see also Affinity Labs, 838 F.3d at 1259 (“The
Supreme Court and [the Federal Circuit] have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”).
The claim “provides only a result-oriented solution[] with insufficient detail
for how a computer accomplishes it. Our law demands more.” Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir.
2017) (“Capital One”).
Citing to Electric Power Group, Appellant asserts that the findings of
Electric Power Group do not apply to the limitations of claim 63. Appeal
Br. 16–17.
We disagree with Appellant. Like the claims of Electric Power
Group, the information which is managed in the claims is basic description
data, “patient data . . . demographic, financial and clinical information[;]
[c]linical information . . . symptom, observation, treatment, assessment,
diagnostic and therapeutic information.” Specification ¶ 71. Claim 63
simply populates this data into a form and does not create new data. The
Specification describes using known technology to accomplish data
processing through a network. See, e.g., Specification ¶ 55. Thus, we find
no departure in the claims before us against the findings in Electric Power.
We also disagree with Appellant that under the holding in Enfish, our
decision would be different. Appeal Br. 17–18. That is, we are unpersuaded
by the Appellant’s argument that its claims are directed to an improvement
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in computer technology like that of claim 17 in Enfish and therefore are
patent eligible. In Enfish, the invention at issue was directed at a wholly
new type of logical model for a computer database: a self-referential table
that allowed the computer to store many different types of data in a single
table and index that data by column and row information. Enfish, 822 F.3d
at 1330–32. In finding the claims “not directed to an abstract idea,” but “to a
specific improvement to the way computers operate,” the Federal Circuit
noted that “the claims are not simply directed to any form of storing tabular
data, but instead are specifically directed to a self-referential table for a
computer database.” Enfish, 822 F.3d at 1336–37. We find nothing in the
claims before us arising to this level of technical improvement in the
claimed “medical software system,” “a non-transitory data storage device”
“processor,” “a user interface” and “common user interface” as found in
Enfish. Instead, we find the claims are focused on “economic or other tasks
for which a computer is used in its ordinary capacity.” Enfish, 822 F.3d at
1336.
Appellant asserts,
The Federal Circuit recently held in Berkheimer6 that whether
claim elements are ‘well-understood, routine and conventional
to a skilled artisan in the relevant field is a question of fact
[that] must be proven by clear and convincing evidence.’
Furthermore, the court in Berkheimer held that ‘[w]hether a
particular technology is well-understood, routine, and
conventional goes beyond what was simply known in the prior
art.’

Appeal Br. 22.

6 Berkheimer v. HP Inc., 881 F.3d 1368 (Fed. Cir. 2018).
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We disagree with Appellant’s interpretation of Berkheimer because
the Federal Circuit made clear that “not every [section] 101 determination
contains genuine disputes over the underlying facts material to the [section]
101 inquiry.” Berkheimer, 881 F.3d at 1368. In fact, the Federal Circuit in
Berkheimer did not require evidentiary support for independent claim 1
because “[t]he limitations amount to no more than performing the abstract
idea of parsing and comparing data with conventional computer
components.” Id. at 1370. Here, as found above, the devices and software
used to perform the abstract idea are conventional, if not known in the
industry, e.g., “Microsoft’s Digital Dashboard web-browser interface,
Microsoft Windows 2000, Microsoft SQL Server 2000 database and the
Windows Distributed interNet Applications (DNA) technologies.”
Specification ¶ 55.
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s determination of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s 35 U.S.C. § 101
rejection of claims 63–82.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 63–82 under
35 U.S.C. § 101.
We do not reach the Examiner’s provisional rejection of claims 63–82
on the ground of non-statutory obviousness-type double-patenting.

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
63–82 Provisional
Obviousness-type
Double Patenting7

63–82 101 Eligibility 63–82

No time period for taking any subsequent action in connection with
this appeal may be extended under 63–82 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

7 As explained above, we do not reach this rejection per Ex parte Moncla.